Mr. Gatto serves as Section Leader for Pillsbury's Intellectual Property group and is co-leader of the firm's open source team and of our Virtual Worlds & Video Games team. He provides a unique combination of nearly 25 years of IP experience and business insights to help companies develop IP strategies that are aligned with their business objectives. His practice focuses on all aspects of intellectual property including patent, trademark, copyright, trade secret, open source and Internet law. His areas of technical focus include computer software, video games, virtual worlds, social networks, user-generated content technology, business methods, Internet-related and e-commerce technology, financial services, bioinformatics, personalized medicine, optics, semiconductors, chemical, mechanical and wireless telecommunications.

Prior to joining our firm, Mr. Gatto headed the local IP practice for Mintz Levin's Reston and Washington offices, and was co-chair of the firm-wide IP Section. Prior to that, he co-founded and co-headed the National Patent Practice and Northern Virginia Technology Practice for Hunton & Williams, the then largest Virginia-based law firm.

Mr. Gatto's practice is international, and it encompasses a full range of IP and technology issues, including: patent, copyright and trade secret litigation; counseling and technology transactions; developing and implementing IP strategies to protect and to monetize IP assets; creating and implementing corporate IP programs; conducting IP audits; conducting complex patent prosecution, including patent appeals, interferences, reexaminations, reissues and protests; handling patent enforcement issues, including licensing and litigation; negotiating and drafting high tech agreements relating to e-commerce, patents and technology; conducting IP due diligence; rendering opinions concerning the infringement, validity and enforceability of patents; handling trademark prosecution, domain name, copyright and trade secret matters; handling IP aspects of employment issues; representing clients in patent and data rights matters relating to government contracts, including Section 1498 cases; advising clients on legal issues associated with open source software including open source patent issues licensing and indemnity issues and corporate policies on use of open source software; advising clients on the legality of cutting edge Internet business methods and technology; and advising clients on SPAM-related issues.

Mr. Gatto has been in the intellectual property field since 1984, when he started as a Patent Examiner in the electro-optics area. Over the years he has had leading roles in a number of national and local patent-related legal and industry organizations. He has been a member of the Board of Trustees and Secretary of the Software Patent Institute; he  served as Chair of the Patent, Trademark & Copyright Section of the Young Lawyers Division of the ABA; was President of the Patent Lawyers Club of Washington; and was a member of the Board of Governors of the Patent and Trademark Office Society.

In addition to his practice, Mr. Gatto has taught Legal Aspects of Biotechnology in Johns Hopkins MBA program.

Over the years, Mr. Gatto has been recognized by his peers as a top lawyer in his field—he is ranked as "AV" from Martindale Hubbell Law Directory, the highest rating given to participating attorneys, and was voted one of the top IP/IT attorneys in Virginia by Virginia Business Journal Survey. Mr. Gatto has been ranked by Chambers USA as one of America's Leading Intellectual Property Lawyers in Northern Virginia. Mr. Gatto was named a Virginia Super Lawyer by Law & Politics and Richmond Magazine and most recently was included in the 2008 Washington DC Super Lawyers list and was selected as one of SmartCEO magazine's 2008 SmartLawyers. He was also included in the 2008 edition of Legal 500 as a Leading Lawyer (the highest recognition available) in Patent Prosecution and was also recognized for Patent Litigation. Mr. Gatto is frequently invited to speak at leading business and legal conferences in the U.S. and internationally.

Mr. Gatto regularly handles unique and high profile intellectual property matters. His representative matters include:

• Obtained preliminary and permanent injunction on behalf of financial services company for a business method patent relating to the municipal bond industry
• Prevailed in a patent interference matter for a university professor for his Nobel-prize winning invention in the field of Chemistry
• Successfully sued the United States Government for patent infringement in the Court of Federal Claims
• Successfully defended two patent infringement lawsuits in the Internet coupon field and successfully enforced patent against a competitor in a third suit
• In a declaratory judgment action filed against a California company in Asheville, NC, obtained summary judgment of infringement, validity and enforceability on behalf of a patent owner
• Successfully represented a bioinformatics company in a patent infringement lawsuit involving Oxford Gene Technology patents relating to oligonucleotide arrays
• Developed a patent portfolio, which has been successfully enforced, for pioneering semiconductor technology relating to gallium nitride based blue LEDs and blue laser devices

Education

J.D., Georgetown University Law Center, 1988

B.E., Electrical Engineering (with a Physics minor), Manhattan College, 1984

Admissions

Commonwealth of Virginia, District of Columbia

U.S. Court of Appeals for the Federal Circuit and the Court of Federal Claims

Registered to practice before: U.S. Patent and Trademark Office

Affiliations

American Bar Association - Patent, Trademark and Copyright Committee; Section of Science & Technology Law, Virtual Worlds and Multi-User Online Games Committee;  Section of Intellectual Property Law - Special Committee on Computer Gaming

American Intellectual Property Law Association - Electronic and Computer Law Committee; Patent Law Committee; Emerging Technology Committee - Chair of Open Source Subcommittee

District of Columbia Bar - Arts, Entertainment, Media & Sports Law Section

Patent Lawyers Club of Washington (Past President)

Intellectual Property Owners (IPO) - Open Source Committee

Representative Speaking Engagements

"Legal Issues in Virtual Worlds: Virtual Law for Non-Lawyers", Virtual World London Conference, 20-Oct-2008

"Legal Issues with Virtual World" presented to George Washington University Law School, Cyberlaw Group, 01-Oct-2008

“Virtual Worlds – Real Law, Real Issues”, American Bar Association Annual Meeting, August 2007

"Do You Truly Own What You Are Licensing? What Every Licensor and Licensee Needs to Know About Open Source Code", Advanced Forum on Technology Licensing Agreements, ACI, 29-Apr-2008

"Business Aspect of Patents: A Primer for the Non-Patent Lawyer" - Presenter, CLE Marathon hosted by Pillsbury; New York, NY, 10-Apr-2008

“Overlooked Intellectual Property Issues: Avoiding Pitfalls that Impact Commercialization”, USIC (United States Industry Coalition); Arlington, VA, 05-Mar-2008

“Significant Recent Events in the Open Source World”, Open Source Seminar hosted by Pillsbury; McLean, VA, 10-Jan-2008

“Essentials of Patent Law for General Litigators”, CLE event hosted by Pillsbury; New York, NY, 05-Nov-2007

"Navigating The New Patent World And Understanding USPTO Proposed Reforms", Panel Discussion, Patent Strategies Conference: Implementing Successful Approaches to IP Protection While Maximizing Business Value, IQPC; New York, NY, 26-Sep-2007

“GPLv3 Has Been Released - Do You Know How the Significant Changes Will Impact You?”, Presenter, IPC Fall Meeting, AIA (Aerospace Industries Association), Arlington, VA, 25-Sep-2007

“GPLv3 Has Been Released – Do You Know How the Significant Changes Will Impact You?”, Open Source Seminar hosted by Pillsbury; McLean, VA, 24-Jul-2007

"What Venture Capitalists and Other Investors Look for in IP Portfolios", Technology IP Due Diligence Conference, ACI; San Francisco, CA, 22-Jun-2007

"Digital Media Patents for Profit", The Business & Technology Of Online Video, Streaming Media East 2007 Conference & Exhibition; New York, NY, 15-May-2007

"Director and Officer Liability for Infringement of Intellectual Property: One More Reason for Effective IP Management" - Presenter, CLE Marathon hosted by Pillsbury; New York, NY, 11-Apr-2007

"The Business Case For/Against Using Open Source in Your Portfolio and Your Client’s Processes" - Moderator, Software IP Strategy Summit; ACI; Palo Alto, CA, 21-Feb-2007

"Power of Angel Investing" - Panelist, IP Due Diligence; University of Virginia in conjunction with the Virginia Active Angel Network; 09-Oct-2006

“GPLv3 – What You Need to Know About the Coming Changes”, Open Source Seminar hosted by Pillsbury; McLean, VA, 07-Sep-2006

"Patents and Open Source - The Sky is Not Falling", C3 Expo; New York, NY, June 2006

“Recent Developments in Open Source”, Open Source Seminar hosted by Pillsbury; McLean, VA, 06-Apr-2006

"Legal Issues in Open Source",- Open Source Licensing: A Doorway to Heaven or Hell?, CLE Spring Training; ACC (Association of Corporate Counsel); San Francisco, CA, 23-Mar-2006

"Protection in the World of Open Source: Best Practices for Mergers and Acquisitions in an Open World", Open Bar; Silicon Valley, CA, 02-Jun-2005

“Legal Issues and Business Ramifications of Open Source Software”, Breakfast Briefing hosted by Pillsbury Winthrop LLP; McLean, VA, 06-Jan-2005

"Legal and Regulatory Aspects of Bioinformatics" – Moderator & Panelist, Infotech Pharma Conference; London, 12-Feb-2002

"Legal Aspects of Applying Bioinformatics to Personalized Medicine", BioFuture Conference; Vancouver, Canada, 21-Nov-2002

"IP Issues for Nanotech Start-ups", International Conference on Computational Nanoscience and Nanotechnology; San Juan, Puerto Rico, 22-Apr-2002

"What Businesses Need to Know About The Value of Patents - a US and Israeli Perspective", Virginia Israel Technology & Trade Summit; Reston, VA, 2001

"The Impact of Open Source Software on University IP Revenue", delivered to Board of Directors, Virginia Tech Intellectual Properties, Virginia Polytechnic Institute and State University; Virginia, 28-Jan-2002

"Intellectual Property as Collateral in Secured Transactions", Commercializing Intellectual Property Conference, Law Seminars International; Virginia, 29-May-2003

"Salvaging Value of IP from Troubled Companies" – Panelist; Business Seminar Co-Hosted By Chevy Chase Bank; Chevy Chase, MD, 15-May-2003

Firm Publications

China Taxes Real Profits from Virtual World Transactions, 17-Nov-2008

Patent Suit Targets Virtual World, Video Game, Social Networking and Other Websites, 10-Nov-2008

Court Rules Copyright Owners Must Consider Fair Use Before DMCA Takedown Notice, 03-Sep-2008

Automated Program for Playing Virtual World Game Deemed Copyright Infringement, 14-Aug-2008

Patent Application Pitfall: Federal Circuit Affirms Invalidity of Software Patent for Inadequate Disclosure, 01-Apr-2008

En Banc Federal Circuit to Revisit the Scope of Patentable Subject Matter: Will Business Method Patents Survive?, 22-Feb-2008

Implied Patent Licensing and the Supreme Court’s Ongoing Review of Quanta Computer, Inc. v. LG Electronics, Inc., 13-Feb-2008

Busybox Stays Busy Enforcing GPL: Second Wave of Open Source License Enforcement Lawsuits Filed, 03-Dec-2007

GPL Enforcement Lawsuit Settles—Underscores the Importance of Open Source Compliance Measures, 02-Nov-2007

First U.S. Lawsuit Filed to Enforce the General Public License, 24-Sep-2007

Final Version of GPL Version 3 is Released – Significant Changes Made to Leading Open Source License, 03-Jul-2007

Injunction Brings VoIP Patent Litigation to the Forefront, 18-Apr-2007

GPL3—Round 2, 28-Jul-2006

GPL Version 3 – More Clear or More Issues?, 18-Apr-2006

Open Source License Survives Challenge: Doubts About GPL Enforceability Continue to Wane, 18-Apr-2006

Patent Appeals Court Ruling Highlights Potential Pitfalls of Over Reliance on Provisional Patent Applications, 02-Feb-2006

Proposed Legislation Would Include Imported Information within Scope of U.S. Patents - Change Could Have Huge Implications for Biotech and Bioinformatics Companies, 21-Nov-2005

Pioneering Open Source Compliance Insurance Product, 02-Nov-2005

In Case of First Impression, Federal Circuit Rules That Contractor Forfeited Patent Rights: Highlights Need to Establish and Implement IP Policies, 14-Dec-2004

Federal Financial Institutions Examination Council Issues Guidance for Managing Open Source Risks, 23-Nov-2004

External Publications

Illegal Judicial Appointments? Constitutional Attacks on Patent and Copyright Decisions, Intellectual Property & Technology Law Journal , Volume 20 Number 10, Co-Authored by Terri Cunningham, October 2008

Federal Circuit Affirms Invalidity of Software Patent for Inadequate Disclosure, ILO Newsletter, Information Technology-USA, 06-May-2008

Infotech and the Law: Watch your step with intellectual property, Washington Technology, Vol. 23 No. 06, 07-Apr-2008

New Rules Change Open-Source Landscape, 15-Oct-2007

Infotech and the Law: Software agreements require hard examination, Washington Technology, Vol. 22 No. 04, 12-Mar-2007

Doubts Wane Over GPL Enforceability, Managing Intellectual Property, February 2007

Doing IP Right – What Start-Ups Need To Know, The Entrepreneur Center @ NVTC, January 2007

Infotech and the Law: Open-source licensing is at the crossroads, Washington Technology, Vol. 21 No. 16, 21-Aug-2006

GPL Version 3 - More Clear or More Issues?, e-Commerce Law Report, Vol. 8 No. 7, July 2006

Extraterritorial Effects Of U.S. Patents, IP Law360, 29-Jun-2006